Working on it.

No tarmac fan site

Postie delivered 2 identical letters today, one of which had to be signed for. Both had all the legal papers I was expecting. I called their number, they called me back just now.
The solicitors for the company whose name I own, had told the Tarmac lawyers that I had been aware of this action since December, that I had allowed the websites to stay up since December and that Tarmac were now suing me for 3 months trademark infringement. They were also going to sue me for something else (I forget). He said they wanted the domain names and they would very generously – despite their huge costs – just call that a deal.

I corrected him about the 3 months and told him the time on my email was less than 60 minutes from knowing. In the end he took me at my word.
I specifically asked if I could keep the domain names and use the websites to sell roses. He said No, that would be building upon Tarmac’s reputation. I asked if I could create a tarmac fan site, he asked if I was making threats (he did!). He said that there was no use at all I could have for the domain and that it had to be surrendered to Nominet.
I then got advised about legal and trademark details. At one point I asked him what the black stuff on roads was and he said he didn’t know. I pointed out of my window and said I see black stuff on the road and regardless of where it has come from people still call it tarmac. He said that would be correct if it had come from Tarmac. I asked him what he called the black stuff that our roads are made of. He came back at me with a question. He was lawyerly in the absolute extreme about this and other issues – that was supremely annoying. ( something like this …. “Does milk come from a cow?” “My milk came from that bottle and I cannot be sure of it’s provenance prior to that. I cannot speak about any other milk or for any cows”). I got a history of tarmac too.

There was no way past this guy. He made it crystal clear that I would not be allowed to keep the domain under any circumstances and that if I hesitated now I that I really did know the circumstances that they would come after me. So… that’s that really. While we were talking he asked if I could stop the domain so the nameservers have been changed and now point nowhere sensible. I say ‘asked’ – I was told it had to be done again because I knew.

They only own the trademark in certain classes, search here for “tarmac”. If you are using the domains for any other purpose outside of those commercial activities which their classes cover I would think you have every right to the domains. The historical usage may cause you problems, but nobody has any legal right to completely claim a combination of latin characters for their sole use. You and your friend have been somewhat bullied, the whole “building upon Tarmac’s reputation” line is twaddle. Tarmac have no reputation in selling roses, they own no trademark in that class of activity. Can you even imagine that being put to a judge in court?

On the other hand, Tarmac are obliged by trademark law to protect their trademark. Sending nasty letters is necessary for them. A musician I know was once challenged by the “Ministry of Sound” for trademark infringement on a compilation he and some others created (I wonder why?), but a well written rebuff by a legally aware friend of his ended the whole episode – both letters were online at one point, but unfortunately I can’t find them now.

I guess it all depends on how badly you want those domains. They are probably within their rights in the original context of your friends use of their mark. With the complication of the domain belonging to you, no doubt it’s less clear for them, and in that case it seems they have little to go with except threats of lawsuits, which they can afford and you can’t. However if they did they would be bypassing documented WIPO arbitration standards for domain names and would potentially place themselves in the position of being unnecessarily litigious, which could cause them grief in front of a judge. Still, backing away slowly and calmly is the best possible move you can make when dealing with barking frothy-mouthed dogs.